Appeal No. 1997-1834 Page 5
Application No. 08/267,527
correction of a recognizable error is permissible and will not run afoul of 35 U.S.C. § 112, first
paragraph. In re Oda, 443 F.2d 1200, 1206, 170 USPQ 268, 272 (CCPA 1971).
Here, we find that one of ordinary skill in the art would have recognized that the inclusion of the
oxygen atom outside the bracket of the recurring unit was an error. In fact, the Examiner herself
understood the nature of the error before Appellants attempted to correct it. See the paragraph
bridging pages 3 and 4 of the First Office Action on the Merits mailed December 1, 1994 (Paper No.
5) in which the Examiner states:
The recurring units of the formulae (Ia) and (Ib) recited in claim 1 are disclosed on
page 3, lines 1-20, of the instant specification. Specific examples of the compounds of the
invention comprising said recurring units are disclosed on page 4. In particular, note
examples (I.1) and (I.2), comprising recurring units of a polyoxyethylene having a thioether
side chain, and the variable “n” indicating the number of recurring units; note that the
oxygen atom to the left of the open bracket, “[”, is bonded to a hydrogen atom and is not
part of the “recurring unit”. The specification fails to provide an adequate written
description of the polyoxyethylene recurring units by including the oxygen atom to the left
of the open bracket, “[”, in the formula of the “recurring unit”.
Furthermore, as Appellants point out in the Brief at page 5, if the recurring units were drawn out as
originally designated, there would be an oxygen to oxygen bond in the resultant compound. Such a
compound would not be a polyoxyethylene compound as described in the Specification. Furthermore,
compound I.3 exemplified on page 4 of the Specification would not be within the genus of the structural
formula. The Examiner’s argument with respect to I.3 is duly noted. However, in this case, the fact
that I.3 contains an additional error simply indicates that two corrections are required. The presence of
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007